David Cole of the Center for Constitutional Rights for Old Glory Condom Corp.

Rachel Blue

Trademark Examining Attorney

Law Office 13

(Craig Morris, Managing Attorney)

Before Sams, Rice and Cissel

Members

Opinion by Sams

Chairman

Old Glory Condom Corp. has appealed from the examining attorney's final refusal to register its mark "OLD GLORY CONDOM CORP" (and design), as shown below, for "prophylactics (condoms)." The design feature of applicant's mark consists of a pictorial representation of a condom decorated with stars and stripes in a manner to suggest the American flag. [FN1]

TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE

The drawing of the mark is lined for the colors red and blue.

The examining attorney refused registration, under Section 2(a) of the Trademark Act, on the grounds that the mark consists of immoral or scandalous matter. [FN2] In particular, the examining attorney found that the use of the American flag as part of applicant's mark for condoms was scandalous because it was likely to offend "a substantial composite of the general public."

Applicant's Use of Its Mark

The record on appeal shows that applicant corporation was formed after Jay Kritchley, applicant's president, participated in an exhibition at the List Visual Arts Center of the Massachusetts Institute of Technology (M.I.T.) in Cambridge, Massachusetts. The exhibition, held in October 1989, was entitled "Trouble in Paradise" and focused on artists' responses to contemporary social and political issues. Mr. Kritchley's exhibit was an adaptation of the symbols of American patriotism to focus attention on the AIDS epidemic and, in particular, to emphasize that Americans have a patriotic duty to fight the AIDS epidemic and other sexually transmitted diseases. Applicant states that, when the exhibition received widespread critical acclaim, Mr. Kritchley decided to turn his theoretical concepts into a corporate enterprise, which now markets condoms under the mark applicant is seeking to register.

While the American flag design appears as a feature of applicant's trademark for condoms, the flag design is not applied to the condoms themselves. Applicant states that on the back of each condom package is the "Old Glory Pledge":

We believe it is patriotic to protect and save lives. We offer only the highest quality condoms. Join us in promoting safer sex. Help eliminate AIDS. A portion of Old Glory profits will be donated to AIDS related services.

The Refusal of Registration

In refusing registration of applicant's mark, the examining attorney argues that a majority of the American public would be offended by the use of American flag imagery to promote products associated with sexual activity. She argues that the flag is a sacrosanct symbol whose association with condoms would necessarily give offense.

Applicant characterizes the issue on appeal as one of first impression: whether a trademark may be refused registration as scandalous solely on the basis of its political content. Applicant argues that the Patent and Trademark Office has registered more than a thousand marks for condoms, many of them sexually suggestive and many that might be considered vulgar. Applicant goes on to argue that the Patent and Trademark Office has registered more than one thousand marks in which an image of the American flag appears. Applicant emphasizes that its mark is expressly designed not to offend but to redefine patriotism to include the fight against sexually-transmitted diseases, including AIDS. Applicant points to its exhibit at M.I.T., which employed a frank sense of humor about both condoms and patriotism to encourage people to overcome an aversion to the use of condoms.

*2 In this record, the only direct evidence of the impact of applicant's mark on the public is that described by applicant in its response to the first office action in this case. Applicant alluded to a "marketing study commissioned by applicant from the Simmons College Graduate School of Management." About this study, applicant noted:

The study, which was made completely independent of applicant, which took three months to complete, and which was undertaken by Simmons College without cost to applicant (due to the College's recognition of the pressing social need to encourage the use of condoms), found that there was a negative public reaction of under 5% of those polled to applicant's use of the subject mark with regard to condoms. [emphasis in original]

We do not know the details of the survey, because applicant did not submit a copy for the record (nor, indeed, did applicant mention the survey in its appeal brief). On the other hand, the examining attorney did not request that applicant submit a copy of the survey, nor did she challenge applicant's summary of the survey results.

"Scandalous" Marks under Section 2(a)

There is relatively little published precedent to guide us in deciding whether a mark is "scandalous" within the meaning of Section 2(a) of the Trademark Act. The examining attorney places principal reliance on In re McGinley, 211 USPQ 668 (CCPA 1981), the most recent decision in which the Board's reviewing court has interpreted the section of the Trademark Act here at issue. In McGinley, the Court was asked to decide the registrability of a mark comprising a photograph of a man and woman kissing and embracing in a manner appearing to expose the man's genitalia. In deciding whether the mark presented for registration was "scandalous" under Section 2(a), the Court first noted that whether a mark is scandalous is to be determined from the standpoint of a substantial composite of the general public. Id., 211 USPQ at 673, citing In re Riverbank Canning Co., 95 F.2d 327, 37 USPQ 268, 270 (CCPA 1938). To define "scandalous," under Section 2(a), the Court looked to the "ordinary and common meaning" of the term, which meaning could be established, according to the Court, by reference to Court and Board decisions and to dictionary definitions. The Court went on to cite dictionary definitions of "scandalous" as "shocking to the sense of ... propriety," "[that which gives] offense to the conscience or moral feelings" and "giving offense to the conscience or moral feelings; exciting reprobation, calling out condemnation ... disgraceful to reputation...." [Webster's New International Dictionary (2d ed. 1942) ] and "shocking to the sense of truth, decency, or propriety; disgraceful, offensive; disreputable...." [Funk & Wagnalls New Standard Dictionary (1945)]. In an attempt to put these provisions of Section 2(a) in context, the Court expressed its opinion that this section of the Trademark Act represents not "... an attempt to legislate morality, but, rather a judgment by the Congress that such marks not occupy the time, services, and use of funds of the federal government." Having set forth its opinion as to the underpinnings of this portion of Section 2(a) of the Trademark Act, the Court (one judge dissenting) concluded that the mark for which registration was sought (i.e., the pictorial representation of an embracing nude couple with exposed male genitalia) was scandalous and, therefore, unregistrable.

*3 In the more than ten years since the McGinley decision, this Board has decided only four cases involving the issue of whether marks were "scandalous" under Section 2(a). The first of these cases, In re Tinseltown, Inc., 212 USPQ 863 (TTAB 1981), involved the mark "BULLSHIT" for attache cases, handbags, purses, belts, and wallets. The Board allowed that the registrability of a profane word was a case of first impression and found that "BULLSHIT," the profane word at issue, was scandalous, within the meaning of Section 2(a), and, therefore, unregistrable. In finding the mark unregistrable, the Board relied on the McGinley case and, in particular, two of the dictionary definitions of "scandalous" cited by the Court in that case: "[g]iving offense to the conscience or moral feelings ..." and "shocking to the sense of ... decency or propriety...."

In re Hershey, 6 USPQ2d 1470 (TTAB 1988) involved the mark "BIG PECKER BRAND" for T-shirts. The mark had been refused registration, as scandalous, on the grounds that "pecker" was a vulgar expression for "penis" and that the mark as a whole, therefore, was offensive or shocking to a substantial composite of the general public. The Board reversed the refusal of registration, finding the evidence unpersuasive to demonstrate the vulgarity of the word "pecker" and noted that the specimens of record were labels showing a design of a bird in conjunction with the word mark "BIG PECKER BRAND." The Board concluded that, in view of the context of the mark's use, the mark neither offended morality nor raised a scandal.

In Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB 1988), the Board determined that a design consisting of the silhouette of a defecating dog, as a mark for polo shirts and T-shirts, was scandalous. Citing the definitions of "scandalous" relied on by the Court in McGinley and by the Board in Tinseltown, the Board found applicant's design mark "vulgar", and, therefore, scandalous. The Board noted in particular the depiction of feces as part of the mark.

The most recent case in which the Board considered whether a mark was "scandalous" under Section 2(a) was In re In Over Our Heads Inc., 16 USPQ2nd 1653 (TTAB 1990). In that case, the mark involved was "MOONIES" (and a design feature) for dolls. The particular dolls to which the mark was applied were novelty items which, upon the squeezing of an attached collapsible bulb, dropped their pants to reveal buttocks (an action known as "mooning"). The examining attorney had contended that the mark was lacking in taste and was an affront to an organized religious group, namely, the Unification Church, whose members were sometimes referred to as "Moonies." The Board reversed the refusal of registration, finding that purchasers were more likely to view the mark as an allusion to "mooning" than as a reference to members of the Unification Church. In discussing the Section 2(a) issue presented, the Board noted that the standards for determining whether a mark is scandalous are somewhat vague and the determination of the issue necessarily highly subjective. In view of the subjective nature of the decision, the Board determined that any doubts about whether a mark was scandalous should be resolved in favor of allowing the mark to be published, to permit any party who believes it would be damaged by registration of the mark to file an opposition to registration.

*4 Although we have concentrated our attention on the more recent cases arising under Section 2(a), we are aware of several reported cases decided during the period 1938-1971 by the Court of Customs and Patent Appeals, the Commissioner of Patents, or this Board, where marks were found scandalous and, therefore, unregistrable. We find the latter to be of little precedential value in deciding the case now before us. Most of these older cases involved a perceived offense to religious sensibilities. In re Riverbank Canning Co., supra [the mark "MADONNA" for wines held scandalous]; Ex parte Summit Brass and Bronze Works, Inc. 59 USPQ 22 (Comr.Pats.1943) [the mark "AGNUS DEI" (and design) for metallic tabernacle safes held scandalous]; In re P.J. Valckenberg, GmbH, 122 USPQ 334 (TTAB 1959) [the mark "MADONNA" for wine held scandalous]; In re Reemtsma Cigarettenfabriken GmbH, 122 USPQ 339 (TTAB 1959) [the mark "SENUSSI" for cigarettes held scandalous ("Senussi" being the name of a Moslem sect whose adherents are forbidden the use of cigarettes) ]; and In re Sociedade Agricola E. Comerical Dos Vinhos Messias, S.A.R.L., 159 USPQ 275 (TTAB 1968) [the mark "MESSIAS" for wine and brandy held scandalous]. Moreover, what was considered scandalous as a trademark or service mark twenty, thirty or fifty years ago may no longer be considered so, given the changes in societal attitudes. Marks once thought scandalous may now be thought merely humorous (or even quaint), as we suspect is the case with the marks held scandalous in Ex parte Martha Maid Mfg. Co., 37 USPQ 156 (Comr.Pats.1938) ["QUEEN MARY" (and design) for women's underwear] and In re Runsdorf, 171 USPQ 443 (TTAB 1971) ["BUBBY TRAP" for brassieres]. The point to be made here is that, in deciding whether a mark is scandalous under Section 2(a), we must consider that mark in the context of contemporary attitudes. See In re Madsen, 180 USPQ 335, 336 (TTAB 1973) [where the Board found the mark "WEEKEND SEX" not scandalous as applied to magazines and noted that "... consideration must be given to the moral values and conduct fashionable at the moment, rather than that of past decades...."]; In re Thomas Laboratories, Inc., 189 USPQ 50 (TTAB 1975) [where the Board found a design mark, consisting of "a cartoon-like representation of a melancholy, unclothed male figure ruefully contemplating an unseen portion of his genitalia," not scandalous as applied to "a corrective implement for increasing the size of the human penis" and where the Board, after quoting from the U.S. Supreme Court's discussion in Roth v. United States, 354 U.S. 476, 477 (1957), concerning what constitutes "obscenity," found that "... the contemporary liberal attitude concerning the question of obscenity as derived from the present understanding of the meaning of the freedoms guaranteed under the First Amendment to the Constitution militates against the narrow interpretation expressed by the Examiner in [refusing registration]...."].

Registrability of Applicant's Mark

*5 Applicant's argument for reversing the refusal to register in this case is essentially two-fold. First, applicant argues that, when viewed in the light of the legal precedent of the Board and the Board's reviewing court, its mark is not scandalous. Second, applicant makes a Constitutional argument that the Board is obligated to apply the provisions of Section 2(a) in a Constitutional manner and that denial of the benefits of registration to applicant's mark because of its political content, even assuming (we presume) the political content of the mark would give offense, would violate the First and Fifth Amendments to the Constitution. Because we are in agreement with applicant's first line of argument, we need not consider the second line of argument in order to allow registration of the mark in this case.

Taking as our starting point the definitions of "scandalous" to which the Board has in previous cases looked for assistance in applying Section 2(a), we have considered whether "OLD GLORY CONDOM CORP" (and flag design) can be characterized as "[g]iving offense to the conscience or moral feelings" or "shocking to the sense of decency or propriety." If any pattern can be discerned from the most recent cases, previously discussed, where the Board or its reviewing court found marks to be scandalous [viz., a mark comprising a photograph of a man and woman kissing and embracing in a manner appearing to expose the man's genitalia, for newsletters (McGinley, supra), "BULLSHIT," for handbags, wallets, etc. (Tinseltown, supra), and the design of a defecating dog, for shirts (Greyhound Corp. v. Both Worlds Inc., supra) ], that pattern seems to describe marks that convey, in words or in pictures, vulgar imagery.

As applicant has asserted (and as the examining attorney seems to concede), this Office has registered many trademarks and service marks that include imagery of the American flag. While we realize that there may be citizens of this country who disapprove of any commercial use of the American flag or American flag imagery, such uses have been sufficiently common that there can be no justification for refusing registration of applicant's mark simply on the basis of the presence in that mark of flag imagery. Nor do we find any evidence in this case that convinces us that a mark containing a pictorial representation of a condom should, simply because of that fact, be refused registration as scandalous. The particular pictorial representation featured in applicant's composite mark was not found by the examining attorney to be vulgar, nor do we find it so. The examining attorney's objection to applicant's mark seems to be directed to the mark's linking of flag imagery and a pictorial representation of a condom, each of which, in itself, she apparently finds unobjectionable. Precisely why this combination of images is scandalous the examining attorney fails to articulate. [FN3]

Moreover, the exmaining attorney offers very little evidence in support of her refusal of registration in this case. Her position is supported mainly by an expression of opinion that a substantial composite of the public would be offended by applicant's mark, which opinion is, in turn, supported by her opinion that the American flag is a "sacrosanct" symbol. To bolster the latter opinion, she alluded to an unsuccessful proposed amendment to the U.S. Constitution to prohibit flag burning and to a comment by Chief Justice Rehnquist in his dissent in Texas v. Johnson, 491 U.S. 397, 428 (1989) that many Americans have an "almost mystical reverence" for the American flag. The examining attorney also made of record printouts, from Mead Data's NEXIS data base, of several news stories referring to a video public service announcement promoting voter registration. The video in question showed rock star Madonna, scantily clad and wrapped in an American flag. The news stories made mention of the disapproval in some quarters of the video's use of the American flag. We are not willing, based solely on the examining attorney's opinion, the evidence of the reaction to the Madonna video, and the unsuccessful effort to amend the U.S. Constitution to prohibit the burning of the flag, to presume that the flag imagery of applicant's mark would give offense in a manner that must be deemed "scandalous" under Section 2(a).

*6 Moreover, whether applicant's mark would be likely to offend must be judged not in isolation but in the entire context of the mark's use. The Board has in other cases looked to the entire context of the use in determining whether the mark in question was scandalous. See In re Hershey, supra ["BIG PECKER BRAND" applied to T-shirts with labels bearing both the trademark and the design of a bird]; In re Leo Quan Inc., 200 USPQ 370 (TTAB 1978) ["BADASS" for bridges for stringed musical instruments found not scandalous, the Board noting that the mark was an acronym derived from the words "Bettencourt Acoustically Designed Audio Sound Systems"]. Here, applicant markets its condoms in packaging which emphasizes applicant's commitment to the sale of high quality condoms as a means of promoting safer sex and eliminating AIDS and its belief that the use of condoms is a patriotic act. Although we know that not everyone would share applicant's view that the use of condoms is a patriotic act, the seriousness of purpose surrounding the use of applicant's mark--a seriousness of purpose made manifest to purchasers on the packaging for applicant's goods--is a factor to be taken into account in assessing whether the mark is offensive or shocking. When we consider that factor, along with the others we have discussed, we find that applicant's mark can in no way be considered "scandalous" under Section 2(a). [FN4]

Decision: The refusal to register is reversed.

J.D. Sams

J.E. Rice

R.F. Cissel

FN1. Serial No. 74/004,391, filed November 21, 1989. At the time of the oral hearing, the Board identified the need for a new drawing of applicant's mark. Applicant thereafter submitted a new drawing, along with a disclaimer, under Section 6 of the Trademark Act, of the words "CONDOM" and "CORP". The amended drawing has now been entered in the record.

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--

(a) Consists of or comprises immoral, deceptive, or scandalous matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.

*****

FN3. In this case, as in others where the issue has been whether a mark is scandalous, we have detected an undercurrent of concern that the issuance of a trademark registration for applicant's mark amounts to the awarding of the U.S. Government's "imprimatur" to the mark. Such a notion is, of course, erroneous. The duty of this Office under the Trademark Act in reviewing applications for registration is nothing more and nothing less than to register those marks that are functioning to identify and distinguish goods and services in the marketplace, as long as those marks do not run afoul of any statutory provision that would prohibit registration. Moreover, the registration scheme of the Trademark Act is one more inclined to inclusion than exclusion, the obvious idea being to give as comprehensive a notice as possible, to those engaged in commerce, of the trademarks and service marks in which others have claimed rights. Just as the issuance of a trademark registration by this Office does not amount to a government endorsement of the quality of the goods to which the mark is applied, the act of registration is not a government imprimatur or pronouncement that the mark is a "good" one in an aesthetic, or any analogous, sense.

FN4. After the oral hearing in this case, the Acting Commissioner of Patents and Trademarks issued an "Order Requiring Further Briefing." The order required the examining attorney and applicant to brief the issue of whether the mark "OLD GLORY CONDOM CORP" (and design) should be refused registration under not only that part of Section 2(a) of the Trademark Act that prohibits registration of "scandalous" marks but also that part of Section 2(a) that prohibits registration of marks that "may disparage ... national symbols or bring them into contempt or disrepute."

The examining attorney filed a supplemental brief in which she explained her position on the issue raised by the Acting Commissioner by stating that applicant's mark "is scandalous and would offend because it brings a national symbol [the flag] into contempt." (emphasis in original)

In its responsive brief, applicant noted that there is little precedent on the meaning of "disparage" in Section 2(a) and argued that the "disparagement" language of Section 2(a) was not intended to apply to designs loosely based on the American flag. Citing Greyhound Corp. v. Both Worlds Inc., supra, applicant argued also that the test for determining whether a mark is disparaging is essentially the same as that for determining whether a mark is scandalous.

It is clear to us that the examining attorney's refusal of registration on the grounds that applicant's mark is scandalous was based, in large part, on her finding that the mark disparages the flag. Her finding that the mark is scandalous subsumed a finding of disparagement. Likewise, our finding, to the contrary, that the mark is not scandalous subsumes a finding that the mark is not disparaging. But, by focusing our analysis and discussion in this case on the issue of whether applicant's mark is scandalous, we do not mean to suggest (and certainly do not hold) that, in every case, a finding that a mark is scandalous subsumes, or is the same as, a finding of disparagement.